Thursday, December 20, 2012

CAFC Affirms TTAB Section 2(a) Ruling: C%&K SU#&ER & Rooster Design for Lollipops Unregistrable as Scandalous

In a precedential ruling, the CAFC affirmed the TTAB's decision [TTABlogged here] holding that the mark depicted below, for "chocolate suckers molded in the shape of a rooster," is scandalous under Section 2(a), and therefore unregistrable. The appellate court concluded that "a mark that creates a double entendre falls within the proscription of Section 1052(a) where, as here, one of its meanings is clearly vulgar." In re Fox, 105 U.S.P.Q.2d 1247 (Fed. Cir. 2012). [mp3 of oral argument here].

The court observed that the determination of whether a mark comprises scandalous matter is a conclusion of law based upon underlying factual inquiries. The factual findings of the Board are reviewed for the presence of substantial evidence in support thereof.

Ms. Fox argued that the Board's finding that her mark has a vulgar meaning was not supported by substantial evidence. The CAFC disagreed. The Board did not err in viewing the distinction between the compound word COCKSUCKER and the two word phrase COCK SUCKER as a "distinction without a difference." The association of the two-word version, COCK SUCKER, with a "poultry-themed product" does not lessen the vulgar meaning, but rather merely established an additional, non-vulgar meaning and a double entendre, which is exactly what Fox intended.

Fox next argued that, even if her mark has a vulgar meaning, the mark is afforded special treatment by CAFC precedent: in her view, when a mark has a double meaning with one of the two being vulgar, the PTO must demonstrate that the public would choose the vulgar meaning.
The court, however, observed that there is no requirement in the Statute that a mark's vulgar meaning be its only relevant meaning, or even its most relevant meaning. Section 2(a) refers to a mark that "consists of or comprises ... scandalous matter." Comprises means includes. Fox conceded that, for her mark to have the intended humorous double meaning, the consumer must understand both the risque and the banal meaning of the mark. Therefore it is enough for the PTO to demonstrate that the mark has (comprises) a vulgar meaning.

The court also disagreed that its precedent excludes double entendres from the statutory bar. The BLACK TAIL case (Mavety) involved an ambiguity regarding the mark's interpretation, not a double entendre. In the JACK-OFF case (Boulevard), the only pertinent meaning of the term was vulgar, although the court distinguished the situation from other cases in which the PTO had approved marks for registration as "double entendres." However, Boulevard case does not suggest that "that a mark that includes a double entendre would be exempt from the prohibition of Section 1052(a) when the mark would be seen by a substantial composite of the general public as having both a vulgar and a non-vulgar meaning."

The CAFC recognized that there are "whimsical" and humorous aspects to the subject mark, but the fact that a mark is funny does not mean it cannot be scandalous. [The court here indirectly cites George Carlin's "Seven Words You Can Never Say on Television" monologue, a risque monologue that generated audience laughter].

Nothing in this decision precludes Fox from continuing to sell her merchandise under the mark at issue, or from seeking trademark protection for some other, otherwise registrable element of her product’s design, dress, or labeling. If Fox is correct that the mark at issue “bring[s] [nothing] more than perhaps a smile to the face of the prospective purchaser,” *** then the market will no doubt reward her ingenuity. But this does not make her mark registrable.

Finally, Fox suggested that, because there is doubt as to how the general public would view her mark, the court should permit the mark to be published for opposition, in order to bring to light any public objection to her mark. The court rejected that proposal, however, because there is no uncertainty here. The PTO is empowered to serve as the "first line of defense against 'scandalous' marks," and the court has "no authority to read such a power out of existence."

The court reiterated that Fox remains free to use her mark in commerce, but she will be unable "to call upon the resources of the federal government to enforce that mark."

TTABlog comment: WYHA? Was there any chance that the CAFC would not agree with the Board that this mark is scandalous? Well, I guess it was a good exercise for the Vanderbilt Legal Clinic.

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Text Copyright John L. Welch 2012.


At 9:02 AM, Blogger Unknown said...

One day someone with a lot of money behind them will challenge the constitutionality of the scandalous / obscene portions of the Lanham Act as violating the First Amendment. Just because a mark is possibly obscene to some governmental official does not mean that it is obscene to all Americans. If Americans find the mark obscene then they will not buy the product and the company will fold. But in this instance the word C---Sucker was used many, many times on the HBO series DEADWOOD and millions of people watched that series--including my 80+ year old Mother who nicknamed her house The Cocksucker Hotel after hearing the phrase on that program. She would have bought this lollypops and given them to her friends.

At 10:09 AM, Blogger Frank said...

Here is just another example of why Congress must act to remove the word "scandalous" from the Trademark Act.

At 9:06 AM, Blogger Unknown said...

No chance of having 2(a) declared unconstitutional. As the court points out, the speech isn't barred.

What amazes me, though, is the statement that Fox has no access to resources of the federal government. Last time I looked, 43(a)(1)(A) was still in force. Any reason to think she couldn't use it?


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